TRADE MARKS ACT, 1963 - Irish Patents Office

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as a trade mark for clothing may only be considered in the context of its objection under Section 10 of the Act. There is no basis for a finding that the Opponent’s earlier user of that word and its proprietorship of it as a trade mark, if proven, are sufficient, of themselves, to warrant refusal of the present application. Proprietorship alone is no longer a deciding factor in whether or not a mark may be registered and nor has any ground of opposition been cited in the Notice of Opposition on which an objection based on proprietorship alone may be sustained. It is therefore unnecessary for me to consider whether or not the Applicant can claim to be the proprietor of the mark put forward for registration and it is sufficient to say that the Opponent’s objection in that regard is invalid. 15. With regard to the entitlement of O.D.C. Enterprises Limited to pursue the application in place of the original applicant, it was clear from Mr. Howard’s submissions at the hearing that the Opponent accepted that an application for registration of a trade mark may be the subject of an assignment 5 and that, if validly assigned, the further prosecution of the application may be undertaken by the assignee. The Opponent’s objection on this point was advanced on the basis that it had not been permitted to inspect the instrument of assignment submitted to the Controller in support of the request by O.D.C. Enterprises Limited to be recorded as proprietor of the application, notwithstanding having made a request in that regard and having paid the prescribed fee. The Opponent also objected because it claimed that the assignment had not been “recorded in the Register”. 16. Referring firstly to the latter issue, I indicated to the parties at the hearing (and now confirm) that there is no question of recordal in the Register of the details of an assignment of a pending application for registration. Unless and until such an application proceeds to registration, there in no entry whatsoever in respect of it in the Register. Rather, particulars of the application are entered in an electronic database which is available for public inspection but which is, in respect of a given application for registration, no more than a record created and maintained by the <strong>Office</strong> for administrative purposes, the contents of which cannot affect the validity of the application in question. I also informed the parties at the hearing 5 the combined effect of Sections 28 and 31 of the Act 8
that the <strong>Office</strong> had not permitted the Opponent to inspect the deed of assignment in question because the Applicant had not given its consent, as required by Rule 60(3)(h) of the Rules. In the event, the Applicant handed over a copy of the deed of assignment to the Opponent’s representatives at the hearing and no further play was subsequently made of this objection by Counsel for the Opponent. For that reason, I have decided to treat the Opponent’s objection to the prosecution of the application in the name of O.D.C. Enterprises Limited as abandoned. Section 8(3)(b) – is the mark deceptive in nature? 17. Section 8(3)(b) of the Act provides that “a trade mark shall not be registered if it is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service (sic)” in respect of which registration is sought. At the hearing, Mr. Howard asserted that deception of the kind referred to in this Section is, in substance, the same as the concept of confusion of the public as referred to in Section 10 of the Act in a case where the deception in question is deception as to the commercial origin of the marked goods and where such deception arises from the similarity between the trade mark propounded for registration and the trade mark of another undertaking. In this regard, he noted that many of the older cases make no distinction between the concepts of deception and confusion, which terms are often used together and interchangeably. In his response, Mr. Coughlan confined his submissions to the question of the likelihood of confusion within the meaning of Section 10, assuming, no doubt, that if I agree that there is no material difference between the concepts of deception and confusion, then it would be unnecessary to offer more than a single rebuttal of the Opponent’s objection. 18. In my opinion, the concept of deception, as referred to in Section 8, may not be conflated with that of confusion, as referred to in Section 10, in the manner suggested. I say that because the prohibition on registration contained in Section 8 is confined to marks that are of such a nature as to deceive, from which I believe it follows that, for the Section to apply, the propensity of the mark to deceive must stem from something inherent in the mark itself rather than from some other circumstance, i.e., the existence of another similar mark. In other words, marks that are deceptive within the meaning of Section 8(3)(b) are marks 9
Page 1 and 2: TRADE MARKS ACT, 1996 Decision in H
Page 3 and 4: - that the use of the mark is prohi
Page 5 and 6: that clothing was sold by Goodstock
Page 7: Section 8(3)(b) [mark deceptive in
Page 11 and 12: with the trade mark TOMMY SPORTS. F
Page 13 and 14: 24. In the present case, the Oppone
Page 15 and 16: adopted to trade off the claimed re
Page 17 and 18: Section 10(2) - is there a likeliho
Page 19 and 20: The average consumer will receive a
Page 21 and 22: assumed to be the case because of v
Page 23 and 24: would or would not have constituted
Page 25: Number Mark Date of Filing 131656 1

TRADE MARKS ACT, 1963 - Irish Patents Office

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